The Complainant is HBI Branded Apparel Limited, Inc. of Winston-Salem, North Carolina, United States of America (“USA”), represented by Banki Haddock Fiora, Australia.
The Respondent is G J BROWN FAMILY TRUST, the trustee and trading name of which is Land-Wise Pty Ltd, of Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with TPP Domains Pty Ltd. dba TPP Internet (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2016. On September 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On the same date, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 6, 2016. For convenience, the Panel will refer to the amended Complaint simply as the Complaint unless it is necessary to distinguish between the two versions.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 7, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2016. The Response was filed with the Center on October 28, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 4, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a wholly-owned subsidiary of Hanesbrands Inc. of the USA which is the parent of the Hanes group. The Hanes group markets and sells products, particularly clothing, around the world under and by reference to the trade mark HANES.
In Australia, the Complainant is the owner of sixteen registered trade marks for or including the word “Hanes”. These include (so far as necessary for the purposes of this administrative proceeding):
- Australian Registered Trade Mark No. 171186 for HANES on a contrasting rectangularly shaped background in respect of essentially men’s and boy’s underwear, shirts, sports shirts and sleepwear. This trade mark was registered on December 14, 1961.
- Australian Registered Trade Mark No. 583803 for HANES in respect of all goods in International Class 25. This trade mark was registered on August 4, 1992.
According to the Registrar, the disputed domain name was registered on January 5, 2013.
According to the WhoIs History included in Annex 3 to the Complaint, the disputed domain name was registered in July 2016 in the name of Acheeva Business Solutions Pty Ltd (the “Former Respondent”).
A reverse WhoIs search shows that, when the Complaint was filed, the Former Respondent had registered some 37,916 domain names at that stage. The Respondent disputes, however, that the Former Respondent is just a “domainer”. Rather, it contends that the Former Respondent “operates several allied businesses (e.g. eCommerce, reseller of domain registration and hosting services, online marketing consultancy, domain name brokerage, lead generation) either alone or in partnership with others”.
When the Complaint was filed on September 28, 2016, the disputed domain name was registered in the name of the Former Respondent.
On October 4, 2016, however, the Registrar processed a transfer of the disputed domain name from the Former Respondent to the Respondent.
The trustee of the Respondent is Land-wise Pty Ltd.
Both the Former Respondent and Land-wise Pty Ltd have the same address. There is no dispute that Mr G J Brown is the sole director and secretary of, and holds 50 per cent of the issued shares in, both the Former Respondent and Land-wise Pty Ltd. The other 50 per cent of the shares are held by G J Brown & Co Pty Ltd.
From the date of its registration in January 2013 until sometime in 2015, the disputed domain name resolved to a website which simply offered the disputed domain name for sale.
At some point in 2015, shortly after the complaint in Jaguar Land Rover Limited v. Greg Brown, Acheeva Business Solutions Pty Ltd,WIPO Case No. DAU2015-0008 was filed, the content of the website changed. After that change, during 2015, the disputed domain name resolved to a website which included some fairly limited text related to “Health and Nutrition”. It is not in dispute between the parties that the text consisted of a number of .cfm files which have in effect been “scraped” from other websites. The website still promoted the disputed domain name as for sale.
In 2016, the website changed again. For much of 2016, the disputed domain name resolved to a website which carried pay-per-click links to clothing of the type offered for sale under or by reference to the Complainant’s trade mark. Some of the links appear to be directed to the Complainant’s own licensed products, for example, “Hanes Underwear”. However, others are not: for example, “Calvin Klein” and “Underwear” and “Panties”. In correspondence with the Complainant before the Complaint was filed, Mr Brown for the Former Respondent stated that this change in the website occurred without the Former Respondent’s knowledge when the web host it was using “closed its web services, removed my content site and moved the domain names to its parking portal.”
When the Complaint was filed, the website had changed again. It redirected to the Twitter account of “@hanes_au” which stated:
“We are setting up a website to facilitate effective localized marketing for providers of Health & Nutrition Education Services in Australia”
This Twitter account included a link to the disputed domain name and was created in July 2016. The disputed domain name currently redirects to this Twitter page still. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or subsequently used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that the Panel deems applicable.
Strictly speaking, the Response was received by the Center late – one day after the due date. The Respondent says that the amended Complaint was served on it after 5:00pm in Queensland (Australia) on October 7, 2016. Accordingly, the Respondent argues the amended Complaint should be treated as having been notified to it on October 8, 2016, and so the due date should be October 28, 2016 rather than October 27, 2016. Alternatively, the Respondent requests an extension of time.
Sensibly, the Complainant has not objected to an extension of time.
If the requirements for fairness and due expedition under paragraph 10 of the Rules are not prejudiced, it is plainly desirable that the administrative proceeding be dealt with on the substantive arguments of both parties. It can hardly be said that any party suffered any prejudice (and the Complainant does not so assert) from the submission of the Response on October 28, 2016; that is, at worst, one day late. Moreover, the Panel was not appointed until November 4, 2016. In these circumstances, if an extension be required for admission of the Response into the Record, the Panel readily grants that extension and the Response forms part of the record in this administrative proceeding. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark (or other relevant identifier) and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.
For the purposes of resolving this administrative proceeding, it is sufficient to note that the Complainant has proven that it owns the registered trade mark HANES, Trade Mark No. 583803, although, as noted in section 4 above, the Complainant’s registered rights in Australia go back many years earlier.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proven trade mark: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001.
Disregarding the “.” extension in the disputed domain name (as is permissible in such a case), the disputed domain name is identical to the Complainant’s proven trade mark.
Accordingly, the Complainant has established the first requirement under the Policy. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, supra.
The Complainant contends that the Respondent is not licensed by it nor is it associated with the Hanes group in any way. It also alleges that the Respondent is not known, or commonly known, by any name from which the disputed domain name may be derived. These matters are not in dispute. Given these matters and the longevity of the Complainant’s ownership of the trade mark in Australia, therefore, the Complainant has established a prima facie case that the Respondent does not have rights or a legitimate interest in the disputed domain name. The Complainant also refers to the way the disputed domain name has been used since January 2013 to buttress its contentions.
The Respondent contends that both it and its predecessor, the Former Respondent, registered the disputed domain name “for the purpose of developing a website promoting providers in the Health and Nutrition Education service industries”. According to the Respondent, HANES is an acronym derived from “Health and Nutrition Education service”. According to the Respondent, these services fall well outside the scope of the Complainant’s trade mark. The Respondent says that the sale of the disputed domain name from the Former Respondent to it occurred “because the Respondent had recently disposed of a residential investment property and was in a position to fund a business plan developed by the Former Respondent”.
The Complainant contends that this claimed purpose is a pretext and should not be accepted. It notes that the Former Respondent raised a similar defence in Jaguar Land Rover Limited v. Greg Brown, Acheeva Business Solutions Pty Ltd, supra. The Respondent seeks to distinguish that case on the basis that it was intended to be a noncommercial, hobby forum for enthusiasts of the relevant type of car which inadvertently resolved to a parking page pending development of the website. In contrast, while accepting that the present disputed domain name involves a commercial intent, the Respondent says that commercial intent has no bearing on or relevance to the business operations of the Complainant.
The present dispute of course falls to be determined according to its own facts.
The Respondent denies the relevance of the conduct of the Former Respondent when the Former Respondent was the holder of the disputed domain name. The Respondent says the position must be assessed at the time it acquired, or became, the registrant. At that time, the Respondent says it did not have notice of any dispute with the Complainant over the disputed domain name. It was, however, aware of the Complainant’s trade mark.
First, the Respondent is correct that, generally, the rights and entitlements of a respondent fall to be determined at the time it became the registrant. That is, however, a general rule only. Panels have been willing to take into account matters before the date the formal respondent became the registrant in a number of situations, particularly where the formal registrant and the prior registrant are under common control or otherwise associated in some relevant way: see e.g., ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J.,WIPO Case No. D2009-0785 and The Proprietors of Strata Plan No. 36, A Turks and Caicos Corporation v. Gift2Gift Corp.,WIPO Case No. D2010-2180.1
In the present case, the Former Respondent and the Respondent are admittedly under common control. The Panel further considers that the Respondent should be attributed with the knowledge of Mr Brown who is the sole director and secretary of both the Former Respondent and the Respondent. Moreover, it is admitted that the Respondent was well aware of the Complainant’s trade mark when it took the transfer of the disputed domain name and on September 28, 2016, the registrant was the Former Respondent.
It is claimed in the Response that there had been communications between the Complainant and the Former Respondent over two years prior to the filing of the Complaint. Consequently, it is claimed, that both the Former Respondent and the Respondent regarded, and were entitled to regard, any claims made by the Complainant as having been withdrawn with an acceptance of the Former Respondent’s, and the Respondent’s rights to pursue their plans in the unrelated field they had identified. This claim is factually wrong (as is admitted elsewhere in the Response). The Complainant and the Former Respondent (in the person of Mr Brown) had been in communication disputing the validity of the registration of the disputed domain name as recently as late July 2016. (It is not clear if the Twitter account was registered before or after this exchange of correspondence). Despite the Respondent’s argument to the contrary, the Panel would not regard the short period between that correspondence and the filing of the Complaint as acquiescence in the Former Respondent’s position or disentitling the Complainant from pursuing its claims under the Policy.
In these circumstances, the Panel ordinarily would not be inclined to treat the Respondent as an unrelated or “innocent” third party.
Secondly, in any event, the Respondent has not advanced a sufficient case to rebut the prima facie case established by the Complainant.
The most significant point is that the claimed intended use is unsupported by any documentation or other corroborating evidence. Paragraph 4(c)(i) of the Policy requires that there be genuine use or demonstrable preparations to use the disputed domain name in some way consistent with rights or legitimate interests. Here, the Respondent states it has recently sold an investment property and so now has the funds to implement the business plan developed by the Former Respondent. No details about the asserted business plan developed by the Former Respondent have been provided. No information has been provided about when it was developed nor about what it entailed. No information has been provided to assist in understanding why the Former Respondent did not itself implement the business plan the Respondent claims the Former Respondent had developed. No details about when the sale which is said to have supplied the funding the Respondent intends to use have been provided. Nor is there any information about what was sold or how much the sale generated. In addition, no details have been provided about when the transfer of the disputed domain name to the Respondent from the Former Respondent was negotiated, agreed or arranged or on what terms. That is particularly important in the present case as it appears that the Registrar effected the transfer several days after the original Complaint was filed.
The level of disclosure made by the Respondent falls far short of what is required to demonstrate preparations for use of the disputed domain name in connection with a good faith offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy.
The way the disputed domain name has been used since its registration and even since its transfer to the Respondent has been described above. It does not provide any sufficient basis to support the Respondent’s claims about demonstrable preparations to use the disputed domain name in connection with a good faith offering of goods or services.
Accordingly, the Panel finds on balance that the Complainant has established the second requirement under the Policy. C. Registered or Subsequently Used in Bad Faith
In contrast to the Uniform Domain Name Dispute Resolution Policy, the Complainant must establish only that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy.
This usually requires demonstration that the disputed domain name has been registered, or used, with knowledge of the Complainant’s trade mark and an intention to take advantage of that trade mark for its trade mark significance.
As already noted, the Respondent admits it was aware of the Complainant’s trade mark when the Respondent became the registrant of the disputed domain name.
Furthermore, the Respondent has failed in its claim that it registered and intends to use the disputed domain name in connection with a good faith offering of goods or services. As the designation “Hanes” is not connected with the Respondent or the Former Respondent in any other way, and the Respondent was well aware of the Complainant’s trade mark, therefore, a finding that the disputed domain name was registered in bad faith must follow. Similarly, as the explanation for the use of the disputed domain name has been rejected, there is no justification for the use of the disputed domain name. Accordingly, the use being made of the disputed domain name is also in bad faith. 6. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: November 18, 2016
1 Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel cites UDRP decisions and other UDRP jurisprudence when appropriate.
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